USPTO Patents Application 09762772

United States Rvtent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE

Unitod Status Patent and Tfudcnuirk Office

Addre«: COMMISSIONER OF PATENTS AND TRADEMARKS

Washington, D.C. 20231 ^

www.uspto.cow

APPLICATION NO.

FILING DATE

FIRST NAMED INVENTOR

ATTORNEY DOCKET NO.

CONFIRMATION NO.

09/762,772

02/13/2001

Hidehanj Ogawa

45023-1001

7906

7590

1 1/27/2002

Mitchell P Brook

LUCIE, FOREWARD, HAMILTON & SCRIPPS
1 1988 EL CAMINO REAL
SUITE 200

San Diego, CA 92130

EXAMINER

NGUYEN, KIM T

ART UNIT

PAPER NUMBER

3713

DATE MAILED: 1 1/27/2002

Please find below and/or attached an Office communication concerning this application or proceeding.

PTO-90C (Rev. 07-01)

•

Office Action Summary

Application No.
09/762,772

•

AppNcant(s)
OGAWA, HIDEHARU

Examiner
Kim Nguyen

Art Unit

3713

Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM
THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 . 1 36(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33)

- Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed may reduce any
earned patent term adjustment. See 37 CFR 1.704(b).

Status

1 )S Responsive to communication(s) filed on 03 September 2002 .
2a)|g| This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1, 453 O.G. 213.
Disposition of Claims

4) ^ Claim(s) 1-7 and 9-15 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) [g] Claim(s) 1-7 and 9-15 is/are rejected.

7) D Claim(s) is/are objected to.

8) D Claim(s) are subject to restriction and/or election requirement.

Application Papers

9) D The specification is objected to by the Examiner.

10) IEI The drawing(s) filed on 13 February 2001 is/are: a)g] accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).

1 1) D The proposed drawing correction filed on is: a)D approved b)D disapproved by the Examiner.

If approved, corrected drawings are required in reply to this Office action.

12) D The oath or declaration is objected to by the Examiner.
Priority under 35 U.S.C. §§ 119 and 120

13) £3 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).

a)IEI All b)D Some*c)D None of:

1 .□ Certified copies of the priority documents have been received.

2.D Certified copies of the priority documents have been received in Application No. .

3.S Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

14) Q Acknowledgment is made of a claim for domestic priority under 35 U.S.C. § 1 1 9(e) (to a provisional application).

a) □ The translation of the foreign language provisional application has been received.

15) D Acknowledgment is made of a claim for domestic priority under 35 U.S.C. §§ 120 and/or 121.
Attachment(s)

1) □ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413) Paper No(s). .

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) 5) □ Notice of Informal Patent Application (PTO-152)

3) □ Information Disclosure Statement(s) (PTO-1449) Paper No(s) . 6) □ Other:

U.S. Patent and Trademark Office

PTO-326 (Rev. 04-01 ) Office Action Summary Part of Paper No. 1 0

Application/Control Number: 09762772 Page 2

Art Unit: 3713

DETAILED ACTION

The amendment filed on September 3, 2002 (paper No. 9) has been received and
considered. By this amendment, claims 12-15 have been added, and claims 1-7, and 9-15 are
pending in the application.

Claim Objections

1 . Claim 12 is objected to because of the following informalities:

In claim 12, line 2, the claimed limitation "the telephone number" should be corrected
to "a telephone number" to provide proper antecedent basis for the claim.

Claim Rejections - 35 USC § 112

2. The following is a quotation of the first paragraph of 35 U.S.C. 112:

The specification shall contain a written description of the invention, and of the manner and process of
making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to
which it pertains, or with which it is most nearly connected, to make and use the same and shall set forth the
best mode contemplated by the inventor of carrying out his invention.

Claims 4, 7, 1 1 and 14 are rejected under 35 U.S.C. 112, first paragraph, as containing
subject matter which was not described in the specification in such a way as to reasonably convey
to one skilled in the relevant art that the inventor(s), at the time the application was filed, had
possession of the claimed invention.

a) In claim 4, lines 2-3; and claim 7, lines 2-3; the claimed limitation "embed the data
representing the score status and the input form in one packet " is not disclosed in the
specification.

Application/Control Number: 09762772 Pa 8 e 3

Art Unit: 3713

b) In claim 14, lines 1-3, the claimed limitation "said score checker concludes that said
new score data is wrong when said new score data is inconsistent with the stored score data"
is not disclosed in the specification. The specification page 8, first paragraph, at most teaches
that when the minimum hole number does not coincide with the number of hole the player plays,
the checker determines that the player forgot to input the latest score, however, the specification
does not teach comparing the new score data with the stored score data.

c) Claim 1 1 is rejected as being dependent on the rejected base claim.

3 . The following is a quotation of the second paragraph of35U.S.C112:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.

Claim 4 is rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter which applicant regards as the
invention.

In claim 4, lines 3-4, the claimed limitation "and input the new score data" is
ambiguous. It is not clear if it is the player who inputs the new score data, or it is the transmitter
that inputs the new score data.

Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
obviousness rejections set forth in this Office action:

Application/Control Number: 09762772
Art Unit: 3713

Page 4

(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
manner in which the invention was made.

4. Claims 1-7, and 9-15 are rejected under 35 U.S.C. 103(a) as being unpatentable over
Colley (U.S. Patent No. 5,283,733) in view of Born et al (US. Patent No. 5,949,679).
a. As per claim 1-2, Colley discloses a score management system which comprises: mobile
terminals 5 (Fig. 1) and a score management server 3 (Fig. 1) are connected to each other via
wireless communication (col. 3, lines 8-16). The score management server receives and
transmits score status from/to the mobile terminal (col. 3, lines 60-68; and col. 4, lines 1-2)
and identifying the identity of the mobile terminal (col. 1, lines 33-36 and 43-45), receives and
updates the score data from the mobile terminal (col. 4, lines 17-18; and col. 3, lines 55-59);
the mobile terminal transmits and receives the score data to/from the management server
(col. 3, lines 60-65; and col. 5, lines 26-27), displays the score data (col. 3, lines 66-68; col. 4,
lines 1-2 and 37-39), and transmits the request for inputting the score data to the score
management server (col. 4, lines 17-18).

Colley does not explicitly disclose storing the score data in the score management server.
However, storing score data in a memory of a server would have been old and well known in the
art. It would have been obvious to a person of ordinary skill in the art at the time the invention
was made to implement a well known memory to the score management server 3 (Fig. 1) of
Colley in order to facilitate storing and managing score data of the player's terminals.

Colley does not teach a server that transmits an input form to the mobile terminal.

Application/Control Number: 09762772
Art Unit: 3713

Page 5

However, Born teaches the claimed limitation (col. 19, lines 32-39). It would have been obvious
to a person of ordinary skill in the art at the time the invention was made to provide the player an
input form on the mobile terminal display of Colley in order to allow the player to input score
data and player's information by filling out the provided form.

b. As per claim 3, since Colley discloses transmitting score status data to a mobile terminal
(col. 3, lines 60-68), Colley obviously discloses a transmission controller for controlling
transmission of score data. Colley does not explicitly disclose transmitting the score status data
in response to the update of the score data. However, Colley discloses the capability to transmit
the update score data to the mobile terminal and the capability to transmit real time score data
(col. 3, lines 63-65). It would have been obvious to a person of ordinary skill in the art at the
time the invention was made to transmit the real time updated score data to the mobile terminal
in response to the update of the score data in order to inform the player the up-to-date scores.

c. As per claim 4, Born teaches transmitting an input form that includes score status data
(col. 19, lines 47-51).

d. As per claim 5-7, refer to discussion in claims 1-4 above. Since Colley discloses a score
management server that performs the same function as the claimed method of claims 5-7 , an
ordinary person skilled in the art at the time the invention was made would be able to derive a
program to be stored in a computer recording medium to perform the function of the score
management server of claims 2-4.

Application/Control Number: 09762772
Art Unit: 3713

Page 6

e. As per claim 9-11, Colley does not explicitly disclose using a data recording medium
such as a compact disc, a floppy disk, a hard disk, etc. to store a computer program. However,
using a data recording medium such as a compact disc, a floppy disk, a hard disk, etc. to store a
computer program would have been old and well known in the art. It would have been obvious
to a person of ordinary skill in the art at the time the invention was made to include a well known
recording medium to the system of Colley in order to store an executable program to manage the
score management server.

f. As per claim 12, using a portable phone as a mobile terminal with a telephone number as
an identifier would have been well known to a person of ordinary skill in the art at the time the
invention was made. It would have been obvious to a person of ordinary skill in the art at the
time the invention was made to use the well known portable phone as a mobile terminal 5

(Fig. 1) of Colley in order to allow the player to obtain a plurality of telephone services besides
getting scoring report from the server.

g. As per claim 13-14, checking for accuracy of an electronics input form would have been
well known to a person of ordinary skill in the art at the time the invention was made. It would
have been obvious to a person of ordinary skill in the art at the time the invention was made to
provide a checker to the server computer 26 (Fig. 1) of Born in order to ensure the correctness of
the inputted data.

h. As per claim 15, refer to discussion in claim 1 above.

Application/Control Number: 09762772

Page 7

Art Unit: 3713

Response to Arguments

5. Applicant's arguments filed September 3, 2002 have been fully considered but they are
not persuasive.

a) In response to applicant's argument in page 7, last two paragraphs; and page 8, lines 1 -7
and first paragraph, on the added limitation "performs a verification to identify said mobile
terminal", since Colley teaches reporting the identification of the mobile terminal (col. 1, lines
33-36), and transmitting the identification of the mobile terminal each time the user actuates the
mobile terminal (col. 1, lines 43-45), Colley obviously teaches verifying the identification of the
mobile terminal. The other argument in page 7, third paragraph, on the newly added limitation
"an input form to be displayed on said mobile terminal for the players associated with said
verification" is moot in view of the new ground of rejection.

b) In response to applicant's argument in page 8, second paragraphs, the independent claims
do not explicitly disclose that the system verifies if the mobile terminal is owned hv the correct
player .

6. Applicant's amendment necessitated the new ground(s) of rejection presented in this
Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).

A shortened statutory period for reply to this final action is set to expire THREE
MONTHS from the mailing date of this action. In the event a first reply is filed within TWO

Application/Control Number: 09762772
Art Unit: 3713

MONTHS of the mailing date of this final action and the advisory action is not mailed until after
the end of the THREE-MONTH shortened statutory period, then the shortened statutory period
will expire on the date the advisory action is mailed, and any extension fee pursuant to 37
CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event,
however, will the statutory period for reply expire later than SIX MONTHS from the date of this
final action.

Any response to this final action should be mailed to:

Box AF

Commissioner of Patents and Trademarks
Washington, D.C. 20231
or faxed to:

(703) 872-9303, (for formal communications; please mark "EXPEDITED
PROCEDURE")

Or:

(703) 308-7768 (for informal or draft communications, please label

"PROPOSED" or "DRAFT")
Hand-delivered responses should be brought to Crystal Plaza II, Arlington. VA.,
Second Floor (Receptionist).

Application/Control Number: 09762772 p age 9

Art Unit: 3713

7. Any inquiry concerning this communication or earlier communications from the examiner
should be directed to Kim Nguyen whose telephone number is (703) 308-7915. The examiner
can normally be reached on Monday - Thursday from 8:00 am to 5:30 pm ET.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Valencia Martin- Wallace, can be reached on (703) 308-41 19. The fax phone number
for this Group is (703)872-9302.

Any inquiry of a general nature or relating to the status of this application or proceeding
should be directed to the Group receptionist whose telephone number is (703)308-1 148.

Kim Nguyen
Patent Examiner
November 21, 2002